Ex parte Van Hall et al.

Board of Patent Appeals and Interferences

Jun 29, 2001

08658849 (B.P.A.I. Jun. 29, 2001)

The hearing set for March 6, 2000 was waived by1
appellants (Paper No. 21).
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MAURICE VAN HALL, DAVID I. MIDDLETON, HENRI SCHWEGMAN,
JAMES L. McMILLAN, and IAN BARRETT
____________
Appeal No. 1999-0178
Application No. 08/658,849
____________
ON BRIEF 1
____________
Before COHEN, NASE, and BAHR, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 10. These claims constitute all of the claims in the
application.
Appeal No. 1999-0178
Application No. 08/658,849
The word “substantially” is a word of degree. In the2
context used, it is not readily apparent to us that
appellants’ underlying disclosure gives an understanding as to
what a “substantially spherical” container would be. As such,
for purposes of this appeal, the term “substantially spherical
container” can only be understood to be a container which has
some apparent spherical characteristics. This matter will be
further addressed, infra, in a remand to the examiner.
In light of the underlying disclosure, we comprehend a3
harness for securing the at least one container to a user to
denote a securement structure intended to be supported by a
person.
2
Appellants’ invention pertains to a breathing apparatus.
A basic understanding of the invention can be derived from a
reading of exemplary claim 1, a copy of which follows.
1. A breathing apparatus comprising:
(i) at least one substantially spherical container2
for holding breathable gas under pressure, and
(ii) a harness to which the at least one container3
is attached for securing the at least one container
to the user.
As evidence of obviousness, the examiner has applied the
documents listed below:
Meikle 932,880 Aug. 31, 1909
Appeal No. 1999-0178
Application No. 08/658,849
3
Vestrem 2,238,759 Apr. 15, 1941
Meidenbauer, Jr. 2,406,888 Sep. 3, 1946
Reiher 4,195,949 Apr. 1, 1980
Kranz 4,250,876 Feb. 17, 1981
The following rejections are before us for review.
Claims 1, 6, and 7 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Meikle in view of Reiher.
Claims 2 through 4, 8, and 9 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Meikle in view of
Reiher, as applied to claim 1 above, further in view of
Meidenbauer, Jr.
Claim 5 stands rejected under 35 U.S.C.§ 103(a) as being
unpatentable over Meikle in view of Reiher, as applied to
claim 1 above, further in view of Vestrem.
Claim 10 stands rejected under 35 U.S.C.§ 103(a) as being
unpatentable over Meikle in view of Reiher, as applied to
claim 1 above, further in view of Kranz.
Appeal No. 1999-0178
Application No. 08/658,849
In our evaluation of the applied prior art, we have4
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into
account not only the specific teachings, but also the
inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
4
The full text of the examiner’s rejections and response
to the argument presented by appellants appears in the office
action
of December 19, 1996 (Paper No. 4) and the answer (Paper No.
13), while the complete statement of appellants’ argument can
be found in the main and reply briefs (Paper Nos. 12 and 16).

OPINION
In reaching our conclusion on the obviousness issues
raised in this appeal, this panel of the board has carefully
considered appellants’ specification and claims, the applied
teachings, and the respective viewpoints of appellants and4
the examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 1999-0178
Application No. 08/658,849
5
We do not sustain the examiner’s respective rejections of
appellants’ claims under 35 U.S.C. § 103(a). Our reasoning in
support of this conclusion appears below.
As to the content of claim 1, the sole independent claim
in the application, the examiner relies upon the combined
teachings of Meikle and Reiher. In the Meikle patent, the
examiner focuses upon the oxygen tank (container) 21 and
proposes a modification as to the shape thereof to effect the
claimed “substantially spherical container”. As support for
the aforementioned change, the examiner looks first to the
asserted spherical oxygen containers (bottles) 57 of Reiher
(page 2 of Paper No. 4) and later (answer, page 6) to a
container of Reiher (capsule 18 comprising a shell 21)
preferably spherical in shape (column 4, line 19).
The Reiher patent does not expressly describe a shape for
the oxygen containers or bottles 57. Further, based upon the
support assembly for the bottles (Figures 6 and 9; column 6,
lines 28 through 37), we do not perceive that one having
ordinary skill in the art would have comprehended that the
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Application No. 08/658,849
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containers or bottles 57 have a substantially spherical shape.
Accordingly, the bottles 57 would not have suggested a
substantially spherical shape for the container 21 of Meikle.
With respect to the emergency capsule shell 21, it clearly is
described as being spherical in shape. However, this shell is
intended to be a life supporting environment for saturation
divers if life support systems of the main decompression
chamber 14 fail. As such, it is clear to us that one having
ordinary skill in the art would not have derived a suggestion
from the shape of Reiher’s shell 21 to configure Meikle’s
container 21, intended to be carried by a person, with a
substantially spherical shape, as now claimed.
Since the evidence of obviousness does not provide
support for the proposed modification of the Meikle teaching,
the rejection of claim 1 cannot be sustained. A review of the
other applied patents to Meidenbauer, Jr., Vestrem, and Kranz,
cited to show other claimed features, reveals to us that they
do not overcome the noted deficiency of the combined teachings
of Meikle and Reiher. Based upon the above deficiency in the
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Application No. 08/658,849
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evidence of obviousness, as applied, each of the examiner’s
obviousness rejections cannot be sustained.
REMAND TO THE EXAMINER
We remand this application to the examiner to consider
the following matters.
1. The examiner should consider whether the language
“substantially spherical” container (claims 1, 6, and 10),
“similar” containers (claim 7), and a “third similar”
container (claim 8) address definite or indefinite terms of
degree, when read in light of the underlying disclosure. See
Seattle Box Co. v. Industrial Crating & Packing, Inc., 731
F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984).
2. The examiner should also assess whether claim 1, in
particular, is taught or suggested by the expansion chamber 28
and harness of Meikle (Figure 1) since it appears that the
expansion chamber may fairly be said to have a substantially
Appeal No. 1999-0178
Application No. 08/658,849
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spherical shape and would contain an ample charge of oxygen
under pressure (page 2, lines 71 through 88). If the examiner
concludes that the subject matter is taught or suggested by
Meikle, an appropriate rejection under 35 U.S.C. § 102(b) or
35 U.S.C. § 103 should be considered. Similarly, the other
pending claims should be reviewed. For example, as to claims 2
and 5, the examiner should consider that Meikle discloses two
containers, i.e., expansion chamber 28 and oxygen tank 21.
The examiner should also evaluate the combined teachings of
Meikle and other prior art, e.g., the teaching of bottle “b”
in Figures 2 and 3 of Keller et al (U.S. Patent No. 2,406,334
of record in the application).
In summary, this panel of the board has not sustained
each of the examiner’s rejections under 35 U.S.C. § 103(a).
Additionally, we have remanded the application to the examiner
to review the matters specified above.
The decision of the examiner is reversed.
REVERSED AND REMANDED
Appeal No. 1999-0178
Application No. 08/658,849
9
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
ICC/RWK
Harold V. Stotland
Emrich & Dithmar
Suite 3000
300 South Wacker Drive
Chicago, Illinois 60606